Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LKQ CORPORATION
`Petitioner
`
`v.
`
`Patent of CLEARLAMP, LLC
`Patent Owner
`_____________
`
`Case No. IPR2013-00020
`Patent 7,297,364
`_____________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`AMEND
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`
`
`
`
`
`
`Trials@uspto.gov
`Tel: 571.272.7822
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`
`
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`LKQ CORPORATION
`Petitioner
`
`v.
`
`Patent of CLEARLAMP, LLC
`Patent Owner
`_____________
`
`Case No. IPR2013-00020
`Patent 7,297,364
`_____________
`
`PETITIONER’S OPPOSITION TO PATENT OWNER’S MOTION TO
`AMEND
`
`
`
`
`
`
`
`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`TABLE OF CONTENTS
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`I.
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`II.
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`STATEMENT OF RELIEF REQUESTED .................................................... 1
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`THE PROPOSED SUBSTITUTE CLAIMS FOR CLAIM 1 ARE
`NOT PATENTABLY DISTINCT FROM THE PRIOR ART ....................... 3
`
`A.
`
`Claim 25 is not Patentably Distinct from the Prior Art ......................... 3
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`Page
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`1.
`
`2.
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`Fully Removing an Original Clear Coat Finish .......................... 3
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`Evening the Lamp Surface by Smoothing Out the Lamp
`Surface to Minimize Any Troughs Created Through the
`Removal of the Damage .............................................................. 5
`
`B.
`
`Claim 25’ is not Patentably Distinct from the Prior Art, Which
`Discloses Restoring a Lamp To Its Original Equipment
`Condition ............................................................................................... 7
`
`C.
`
`Claim 25’’ is not Patentably Distinct from the Prior Art ...................... 9
`
`1.
`
`2.
`
`Removing Damage from the Lamp Surface of the Lamp ........... 9
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`Restoring a Lamp to its Original Equipment Condition,
`With the Lamp Surface Having an Optical Quality
`Similar to the Optical Quality of an Original Equipment
`Lamp Surface .............................................................................. 9
`
`III. THE PROPOSED SUBSTITUTE CLAIMS FOR CLAIM 13 ARE
`NOT PATENTABLY DISTINCT FROM THE PRIOR ART ..................... 10
`
`A.
`
`Claim 37 is not Patentably Distinct from the Prior Art ....................... 10
`
`1.
`
`2.
`
`Fully Removing an Original Clear Coat Finish ........................ 11
`
`Evening the Lamp Surface by Smoothing Out the Lamp
`Surface to Minimize Any Troughs Created Through the
`Removal of the Damage ............................................................ 11
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`i
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`3.
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`Statically Neutralizing Debris on the Lamp Surface to
`Facilitate Removal of all of the Debris on the Lamp
`Surface After all of the Steps that Create Debris ...................... 11
`
`Claim 37’ is not Patentably Distinct from the Prior Art, Which
`Discloses Restoring a Lamp To Its Original Equipment
`Condition ............................................................................................. 12
`
`Claim 37’’ is not Patentably Distinct from the Prior Art, Which
`Discloses Removing Damage from the Lamp Surface of the
`Lamp .................................................................................................... 12
`
`B.
`
`C.
`
`IV. PO HAS NOT SHOWN THAT THE SUBSTITUTE CLAIMS ARE
`PATENTABLY DISTINCT OVER PRIOR ART KNOWN TO PO ........... 13
`
`V.
`
`PO HAS NOT SHOWN SPECIAL CIRCUMSTANCES TO
`JUSTIFY MULTIPLE SUBSTITUTE CLAIMS .......................................... 13
`
`A.
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`PO Failed to Rebut the Presumption that Only One Substitute
`Claim is Needed to Replace each Challenged Claim .......................... 13
`
`B.
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`PO Failed to Justify the Second and Third Substitute Claims ............ 14
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`VI. CONCLUSION .............................................................................................. 15
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`
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`ii
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Patent Owner Clearlamp LLC (“PO” or “Clearlamp”), through its Motion to
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`Amend (“Motion”)1 and Patent Owner Response (“Response”), alleges that the
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`’364 Patent is the first disclosure of a process for refurbishing lamps to original
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`equipment condition. In this regard, PO argues that the prior art Kuta reference
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`fails to disclose the proposed substitute claims because it targets the consumer
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`retail market, not the OEM refurbished parts market. (Motion, 2). Kuta, however,
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`is not limited to PO’s purported “consumer retail market”. Regardless, the prior art
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`teaches that “‘restoring’ [car parts] is an art based partly on observing,
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`documenting and duplicating just how the factory did it when new”. (Ex. 1026)
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`(emphasis added). PO’s expert, Mr. Katsamberis, admits that the prior art AS 4000
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`clear coat was used to “create OEM headlamps”. (Ex. 1017, 23:12-17). The Nestell
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`patent is an example of a prior art patent that corroborates Mr. Katsamberis’
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`admission regarding the AS 4000 clear coat, its prior art status, and its use to create
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`OEM headlamps. (Ex. 1028, 6:34-36). PO’s proposed substitute claims do not
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`distinguish over the prior art of record, let alone the prior art known to PO.
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`PO proposes
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`three
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`iterative substitute claims for each challenged
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`
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`1 The Motion does not contain a statement of material facts. Accordingly, no
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`response is due pursuant to 37 C.F.R. §42.23(a), and no facts are admitted.
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`1
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`independent claim.2 Specifically, substitute Claim 25 adds trivial features to Claim
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`1, substitute Claim 25’ adds trivial features to Claim 25 and substitute Claim 25’’
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`adds trivial features to Claim 25’. Similarly, substitute Claim 37 adds trivial
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`features to Claim 13, substitute Claim 37’ adds trivial features to Claim 37, and
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`substitute Claim 37’’ adds trivial features to Claim 37’. Each iteration of the
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`substitute claims was known in the prior art, so none of the proposed substitute
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`claims is patentably distinct from the prior art. PO also has not demonstrated a
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`need sufficient to rebut the presumption that only one substitute claim should
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`replace each challenged claim. Moreover, PO has failed to distinguish the
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`alternate substitute claims from one another. PO has also contravened page limit
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`rules by impermissibly incorporating its Response throughout its Motion. (Motion,
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`2, 3, 5, 6) (e.g., “This is explained in the Patent Owner Response in [specific
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`Sections of Response].”; “. . . for the same reasons discussed in the Patent Owner
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`Response . . .”). The incorporated arguments should not be considered. (37 C.F.R.
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`§42.6(a)(3)).
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`PO has thus failed to meet its burden to show that it is entitled entry of the
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`substitute claims proposed in the Motion.
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`
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`2 While the Opposition focuses on the substitute claims, independent Claims 1 and
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`13 are also unpatentable over the art of record and the new art as applied herein.
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`2
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`II. THE PROPOSED SUBSTITUTE CLAIMS FOR CLAIM 1 ARE NOT
`PATENTABLY DISTINCT FROM THE PRIOR ART
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`PO presented (i) Claim 25 as a first proposed substitute claim for Claim 1 if
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`Claim 1 is found unpatentable, (ii) Claim 25’ as a second alternative proposed
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`substitute claim for Claim 1 if Claims 1 and 25 are found unpatentable and (iii)
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`Claim 25’’ as a third alternative proposed substitute claim for Claim 1 if Claims 1,
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`25 and 25’ are found unpatentable. (Motion, 2-4).
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`A. Claim 25 is not Patentably Distinct from the Prior Art
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`Claim 25 adds “fully removing an original clear coat finish from the lamp
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`surface of the lamp” and “evening the lamp surface by smoothing out the lamp
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`surface to minimize any troughs created through the removal of the damage” to
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`Claim 1. (Proposed amendments underlined). This proposed amendment should
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`not be allowed because Claim 25 is indefinite: the phrase “the removal of the
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`damage” lacks any antecedent basis in the claim. Claim 25’s indefiniteness is
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`highlighted by Claim 25’’, which recites “removing damage from the lamp surface
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`of the lamp,” providing the antecedent basis for “the removal of the damage” that
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`Claim 25 lacks. The Board should reject Claim 25 for this reason alone.
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`Moreover, as described below, the prior art teaches each step of Claim 25.
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`1. Fully Removing an Original Clear Coat Finish
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`The Response admits that Kuta discloses removing the clear coat, but
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`characterizes Kuta as only partially removing the clear coat. (Response, 21).
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`3
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`Kuta, however, does not use the term “partially.” To the contrary, Kuta teaches
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`removing the original exterior surface of the lamp, which is “primarily factory
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`installed hard coating materials”. (Ex. 1002, ¶ 23). Kuta also discloses that the
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`“first abrasion step primarily removes a scratch resistant coating applied by the
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`lens manufacturer”. (Id. at ¶ 25). Thus, Kuta teaches the ordinary artisan that the
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`original clear coat is removed, not that the original clear coat is partially removed.
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`PO mischaracterizes Kuta based on its disclosure that when a headlamp is in
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`situ, its corners are of “limited access”. (Response, 21-23). Kuta, however, states
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`that access to the corners is only limited when using a sanding tool. (Ex. 1002, ¶
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`23). Kuta discloses that a user can still access the corners to manually remove
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`clear coat in the corners, meaning the clear coat can be fully removed. (Id.).
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`If the Board finds that Kuta teaches partially removing the clear coat, it
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`would have been obvious to a person of ordinary skill to fully remove the clear
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`coat. There is no leap of logic from partially removing clear coat to fully removing
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`clear coat. Certainly, once a headlamp is removed from a vehicle as taught by Butt
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`(Ex. 1003) or Eastwood (Ex. 1004), there are no limited access corners on the
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`lamp, which is the only basis for PO’s purported distinction. PO’s own coatings
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`expert, Mr. Katsamberis, admitted that “limited access corners” would not exist in
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`Kuta if its lamp was removed “[b]ecause the car body will not be there to limit
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`your access to the corners”. (Ex. 1017, 101:12-102:15). He thus admitted that
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`4
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`applying Kuta’s process to the removed lamp fully removes the clear coat.
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`Further, when Mr. Katsamberis was working at Visteon, before the filing of the
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`’364 Patent (Ex. 2008), he knew that the original clear coat had to be fully
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`removed before applying a fresh coat. (Ex. 1017, 129:18-130:9).
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`Other art confirms that it was well-known to fully remove a clear coat when
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`refurbishing a headlamp. Toyota Prelude Club Forum Posts (“Prelude”, Ex. 1024)
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`are prior art Internet forum posts that contain a December 8, 2004, 11:43 AM entry
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`in which a member, “lude_vtec”, posted that one of the steps for “renewing one-
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`piece headlights” was to “Repeat above procedure with the 600 grit sandpaper after
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`all of the clearcoat is removed (use water).” (Emphasis added). The combination
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`of Prelude and Kuta accordingly teaches fully removing the clear coat. A person
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`of ordinary skill in the art would have been motivated to combine Prelude with
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`Kuta at least because both references relate to refurbishing vehicle lamps.
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`2. Evening the Lamp Surface by Smoothing Out the Lamp
`Surface to Minimize Any Troughs Created Through the
`Removal of the Damage
`
`PO cites to column 3, lines 24 to 26 of the ’364 Patent, reproduced below, as
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`supporting the “evening the lamp surface” amendment of Claim 25:
`
`Referring back to FIG. 5, the evening of the lamp surface 10 includes
`the step of grinding the lamp surface 10 with a sandpaper having a grit
`of approximately 320, at 32. The lamp surface 10 is smoothed out as
`much as possible so that, if any troughs are created through the
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`5
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`removal of the damage 14, they are minimized. (Emphasis added).
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`Thus, the act in the ’364 Patent that evens the lamp surface is grinding the
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`surface with 320 grit sandpaper. Kuta discloses grinding the surface with a “320
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`grit sanding disc”. (Ex. 1002, ¶ 11). Kuta teaches the same act that the ’364 Patent
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`says achieves the claimed evening, so Kuta teaches this limitation of Claim 25.
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`Moreover, Kuta discloses a process for removing damage to a lamp. (Ex.
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`1002, ¶ 23 (“The method is a step-by-step process for removing this damage, to
`
`return the lenses 10 to like-new condition…”)) (emphasis added). Kuta discloses
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`sanding the lamp surface to smooth the lens. (Id. at ¶ 28 (sanding disc 20 is used
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`for “smoothing lens 10”)). Any troughs created through the removal of the
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`damage would be minimized by the smoothing described in paragraph 28 of Kuta.
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`The sanding and smoothing described in Kuta remove damage and return the lens
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`to “like-new condition.” (Id. at ¶ 23). This disclosure of Kuta thus further teaches
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`the “evening” step of Claim 25.
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`Other art confirms that it was well-known that sanding a lens evens the
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`surface of the lens. VehiCROSS Forum Posts (“VehiCROSS”, Ex. 1025) are prior
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`art Internet forum posts that contain a September 17, 2004, 11:08 AM entry in
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`which a member, “ron”, posted, “Scratches and dents that don’t come off with the
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`polishing will need to be sanded first in order to smooth out to a level surface.”
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`(Emphasis added). VehiCROSS explicitly discloses that sanding a lens smooths it
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`6
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`out to an even surface. The combination of VehiCROSS with Kuta therefore also
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`discloses “evening the lamp surface” as in Claim 25. A person of ordinary skill in
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`the art would have been motivated to combine VehiCROSS with Kuta at least
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`because both references relate to refurbishing vehicle lamps.
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`Finally, Cole (charted in the Petition for Inter Partes Review (“Petition”))
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`discloses evening the lamp surface by smoothing out the surface to minimize any
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`troughs created through the removal of damage. (Ex. 1008, 2:54-55; 3:15-39;
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`Petition, 36). A person of ordinary skill would have been motivated to combine
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`Cole and Kuta at least because both references relate to refurbishing vehicle lamps.
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`B. Claim 25’ is not Patentably Distinct from the Prior Art, Which
`Discloses Restoring a Lamp To Its Original Equipment Condition
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`As shown above, Claim 25 is not patentably distinct from the prior art.
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`Claim 25’ adds “wherein, the steps (b) through (h) are performed to restore the
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`lamp to its original equipment condition” to Claim 25. (Proposed amendments
`
`underlined). This additional language does not render Claim 25’ patentably
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`distinct from Claim 25 or the prior art.
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`Kuta discloses performing its process to restore the lamp to its original
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`equipment condition. (Ex. 1002, ¶ 10 (“[T]he present invention . . . restores optical
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`clarity and light output to the level of new lenses.”); ¶ 23 (“The method is a step-
`
`by-step process for removing this damage, to return the lenses 10 to like-new
`
`condition without the relatively high cost of replacing them.”) (emphases added).
`7
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`Both Mr. Katsamberis and Mr. Bell agree that “like-new” as used in Kuta discloses
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`original equipment condition. (Ex. 1017, 90:17-91:2; Ex. 1018, 59:24-60:1).
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`Other art confirms that it was well-known to restore lamps to their original
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`equipment condition. A prior art article in the July, 2001 issue of Mopar Muscle
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`Magazine (“Mopar”, Ex. 1026) on page 1 states “‘[R]estoring’ is an art based
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`partly on observing, documenting and duplicating just how the factory did it when
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`new”. (Emphasis added). It also teaches the reader on page 3 to “Document the
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`plating on the headlamp buckets. Every part gets scrutinized. To truly restore the
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`car, every part has to be returned to its original state.” (Emphasis added). The
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`combination of Mopar and Kuta accordingly teaches Claim 25’. A person of
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`ordinary skill in the art would have been motivated to combine Mopar with Kuta at
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`least because both references relate to refurbishing vehicle lamps.
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`The Zuk patent, which was known to PO during prosecution of the ’364
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`Patent, also teaches restoring a lamp to its original equipment condition. (Ex.
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`1022, Abstract (“the process will restore plastic glass replacements . . . to a state
`
`where the transparency, optical quality, and appearance are close to if not equal to,
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`a new article”)). A person of ordinary skill would have been motivated to combine
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`Zuk and Kuta at least because both references relate to refurbishing vehicle lamps.
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`PO states, “the fact that Petitioner copied Clearlamp’s process (Section
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`II.E.1), and the evidence of the commercial success (Section II.E.2) of the process,
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`the requirement that claimed steps are performed to restore the lamp to its original
`
`equipment condition, patentably distinguishes Claim 25’ from the prior art.” This
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`appears to be a rehash of PO’s secondary considerations arguments, which are
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`addressed in Section II.E of LKQ’s Reply to the Response, filed herewith.
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`C. Claim 25’’ is not Patentably Distinct from the Prior Art
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`As shown above, Claim 25’ is not patentably distinct from Claim 25 or the
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`prior art. Claim 25’’ adds “removing damage from the lamp surface of the lamp”
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`and “the lamp surface having an optical quality similar to the optical quality of an
`
`original equipment
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`lamp surface”
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`to Claim 25’. (Proposed amendments
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`underlined). This limitation, however, does not render Claim 25’’ patentably
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`distinct from Claim 25’ or the prior art.
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`1. Removing Damage from the Lamp Surface of the Lamp
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`Kuta expressly discloses the trivial limitation of removing damage from the
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`lamp surface of a lamp. (Ex. 1002, ¶ 23 (“The method is a step-by-step process for
`
`removing this damage, to return the lenses 10 to like-new condition without the
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`relatively high cost of replacing them.”)) (emphasis added). Cole also teaches
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`removing damage from a lamp surface. (Ex. 1008, 3:13-17).
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`2. Restoring a Lamp to its Original Equipment Condition, With
`the Lamp Surface Having an Optical Quality Similar to the
`Optical Quality of an Original Equipment Lamp Surface
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`Kuta discloses performing its disclosed process to restore the lamp to its
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`9
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`original equipment condition, with the lamp surface having an optical quality
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`similar to the optical quality of an original equipment lamp surface. (Ex. 1002, ¶
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`10 (“[T]he present invention . . . restores optical clarity and light output to the level
`
`of new lenses.”)) (emphasis added).
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`Cole confirms that restoring a lamp to the recited condition was well-known
`
`in the prior art, and thus teaches this proposed new limitation. (Ex. 1008, 7:54-56).
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`III. THE PROPOSED SUBSTITUTE CLAIMS FOR CLAIM 13 ARE NOT
`PATENTABLY DISTINCT FROM THE PRIOR ART
`
`PO has presented (i) Claim 37 as a first proposed substitute claim for Claim
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`13 if Claim 13 is found unpatentable, (ii) Claim 37’ as a second alternative
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`proposed substitute claim for Claim 13 if Claims 13 and 37 are found unpatentable
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`and (iii) Claim 37’’ as a third alternative proposed substitute claim for Claim 13 if
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`Claims 13, 37 and 37’ are found unpatentable. (Motion, 5-7).
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`A. Claim 37 is not Patentably Distinct from the Prior Art
`
`Claim 37 adds “fully removing an original clear coat finish from the lamp
`
`surface of the lamp”, “evening the lamp surface by smoothing out the lamp surface
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`to minimize any troughs created through the removal of the damage”, and
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`“statically neutralizing debris on the lamp surface to facilitate the removal of all of
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`the debris on the lamp surface after the steps (b) through (d)” to Claim 13.
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`(Proposed amendments underlined). Claim 37 is not patentably distinct from the
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`prior art.
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`10
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`1. Fully Removing an Original Clear Coat Finish
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`As discussed above with respect to Claim 25, the prior art discloses fully
`
`removing an original clear coat finish from the lamp surface of the lamp.
`
`2. Evening the Lamp Surface by Smoothing Out the Lamp
`Surface to Minimize Any Troughs Created Through the
`Removal of the Damage
`
`As discussed above with respect to Claim 25, the prior art discloses evening
`
`the lamp surface by smoothing out the lamp surface to minimize any troughs
`
`created through the removal of the damage.
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`3. Statically Neutralizing Debris on the Lamp Surface to
`Facilitate Removal of all of the Debris on the Lamp Surface
`After all of the Steps that Create Debris
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`Kuta discloses statically neutralizing debris on the lamp surface to facilitate
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`the removal of all of the debris on the lamp surface. (Ex. 1002, ¶¶ 23, 24, 29). PO
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`agrees that Kuta discloses static neutralization, but argues that Kuta fails to
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`disclose statically neutralizing debris on the lamp at a specific point in the process,
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`namely, after all the steps that could create debris. (Response, 32).
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`Statically neutralizing debris after all the steps that create debris would have
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`been obvious to an artisan of ordinary skill. An artisan of ordinary skill would
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`understand that it may be unproductive to statically neutralize debris at a certain
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`point in a process if more debris will be created subsequently in the process. As
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`PO itself admits, “[l]ogic dictates that [debris is removed] after all steps that create
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`debris on the lamp surface” in the first place. (Response, 18) (emphasis added).
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`PO further states that it would be “common sense” to clean debris after all the steps
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`that could create debris. (Id. at 19) (emphasis added). Even PO’s expert, Mr. Bell,
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`“confirms that one of skill in the art would recognize that static neutralization must
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`occur after the steps that create debris in the refurbishing of the lamp are complete
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`. . . .” (Id.) (emphasis added). Accordingly, the “statically neutralizing debris”
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`step of Claim 37 is obvious. (See also Ex. 1018, 86:16-20).
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`Cole also demonstrates that it was well-known to statically neutralize debris
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`on the lamp surface to facilitate removal of all of the debris on the lamp surface
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`after all of the steps that create debris. (Ex. 1008, 3:13-17, 3:54-61; 6:39-46).
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`B. Claim 37’ is not Patentably Distinct from the Prior Art, Which
`Discloses Restoring a Lamp To Its Original Equipment Condition
`
`As shown above, Claim 37 is not patentably distinct from the prior art.
`
`Claim 37’ adds “wherein, the steps (b) through (i) are performed to restore the
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`lamp to its original equipment condition” to Claim 37. (Proposed amendments
`
`underlined). This additional limitation does not render Claim 37’ patentably
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`distinct from Claim 37 or the prior art. Specifically, as discussed above with
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`respect to Claim 25’, the prior art discloses restoring a lamp to its original
`
`equipment condition.
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`C. Claim 37’’ is not Patentably Distinct from the Prior Art, Which
`Discloses Removing Damage from the Lamp Surface of the Lamp
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`12
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`As shown above, Claim 37’ is not patentably distinct from Claim 37 or the
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`prior art. Claim 37’’ adds “removing damage from the lamp surface of the lamp”
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`to Claim 37’. (Proposed amendments underlined). This additional limitation does
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`not render Claim 37’’ is not patentably distinct from Claim 37’ or the prior art.
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`Specifically, as discussed above with respect to Claim 25’’, the prior art discloses
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`removing damage from the lamp surface of the lamp.
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`IV. PO HAS NOT SHOWN THAT THE SUBSTITUTE CLAIMS ARE
`PATENTABLY DISTINCT OVER PRIOR ART KNOWN TO PO
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`PO has the burden to “show patentable distinction over the prior art of
`
`record and also prior art known to the patent owner”. (Case IPR2012-00027, Paper
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`26 at 7) (emphasis added). PO was aware of Cole (Ex. 1021), but did not discuss
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`Cole in its Motion. Nor did PO explain why Cole does not disclose the proposed
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`substitute claims. PO, and specifically inventor Maurice Paperi, was also aware of
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`the prior art AS 4000 clear coat, which shares the same chemistry as MAGNI 700.
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`(Ex. 1017, 18:21-19:2; 22:15-23:11). Thus, PO knew that AS 4000 was a
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`sprayable heat-curable prior art clear coat which, when applied to a lamp, results in
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`an OEM condition lamp, yet did not even mention AS 4000 in the Motion. The
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`Motion should be denied because it did not address prior art known to PO.
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`V.
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`PO HAS NOT SHOWN SPECIAL CIRCUMSTANCES TO JUSTIFY
`MULTIPLE SUBSTITUTE CLAIMS
`
`A.
`
`PO Failed to Rebut the Presumption that Only One Substitute
`Claim is Needed to Replace each Challenged Claim
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`13
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`“A motion to amend may . . . propose a reasonable number of substitute
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`claims. The presumption is that only one substitute claim would be needed to
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`replace each challenged claim, and it may be rebutted by a demonstration of need.”
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`(37 C.F.R. §42.121(a)(3)) (emphasis added). PO has offered three alternative
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`substitute claims for each of Claims 1 and 13. PO has not even attempted to rebut
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`the presumption that “only one substitute claim would be needed to replace each
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`challenged claim”. (37 C.F.R. §42.121(a)(3)).
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`“Alternative claim sets or contingent amendments may be permitted if the
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`total number of substitute claims is reasonable.” (Federal Register, Vol. 77, No.
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`157, Rules of Practice for Trials Before the Patent Trial and Appeal Board,
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`Response to Comment 75) (emphasis added). For each of Claims 1 and 13, PO has
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`offered two substitute claims (i.e., Claims 25’, 25’’, 37’ and 37’’) beyond the first
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`substitute claims (i.e., Claims 25 and 37), but has not even attempted to explain
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`whether the total number of substitute claims is reasonable.
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`B.
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`PO Failed to Justify the Second and Third Substitute Claims
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`A “patent owner needs to show patentable distinction of the additional
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`substitute claim over all other substitute claims for the same challenged claim”.
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`(Case IPR2012-00027, Paper 26 at 8). PO has not however shown that the
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`additional substitute claims (i.e., Claims 25’, 25’’, 37’ and 37’’) are patentably
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`distinct from the first substitute claims (i.e., Claims 25 and 37). Indeed, as shown
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`14
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`above, Claims 25’, 25’’, 37’, and 37’’ are neither patentably distinct from the first
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`substitute claims nor patentably distinct from the prior art.
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`Thus, in addition to the reasons that (i) none of the proposed substitute
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`claims are patentably distinct from the prior art and (ii) PO failed to disclose art
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`known but not of record, LKQ requests that the Board deny entry of the additional
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`substitute claims (i.e., Claims 25’, 25’’, 37’ and 37’’) because (iii) PO has failed to
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`rebut the presumption that only one substitute claim is needed and (iv) the
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`additional substitute claims (i.e., Claims 25’, 25’’, 37’ and 37’’) are not patentably
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`distinct from the first substitute claims (i.e., Claims 25 and 37).
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`VI. CONCLUSION
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`For the foregoing reasons, Petitioner requests that each proposed substitute
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`claim be found unpatentable and denied entry in the ’364 Patent.
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`By:
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`Respectfully submitted by
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`K&L Gates LLP,
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` /Alan L. Barry/
`Reg. No. 30,819
`Alan L. Barry
`Customer No. 24573
`Date: September 30, 2013
`e-mail: alan.barry@klgates.com
`telephone number: 312-807-4438
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`15
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`
`
`Matthew Cutler – mcutler@hdp.com
`Bryan Wheelock – bwheelock@hdp.com
`Douglas Robinson – drobinson@hdp.com
`Karen Bearley – kbearley@hdp.com
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`By:
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`Case IPR2013-00020; Petitioner’s Opposition to Motion to Amend
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`A copy of this document has been served to counsel for the Patent Owner at
`the following electronic mail addresses, pursuant to an agreement with the Patent
`Owner, on this 30th Day of September, 2013:
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`
`
`
`
`
` /Alan L. Barry/
`Reg. No. 30,819
`Alan L. Barry
`K&L Gates LLP
`e-mail: alan.barry@klgates.com
`telephone number: 312-807-4438
`fax number: 312-827-8196
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`1
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